WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat SA v. Admin - Oversee Domain Management, LLC
Case No. D2013-0317
1. The Parties
The Complainant is Baccarat SA of Baccarat, France, represented by MEYER & Partenaires, France.
The Respondent is Admin - Oversee Domain Management, LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <onlinebacarrat.com> is registered with NameKing.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2013. The Response was filed with the Center March 12, 2013.
The administrative proceedings have been suspended from March 19, 2013 to May 23, 2013 at the parties' request.
The Complainant filed a Supplemental filing on May 22, 2013. The Respondent filed an objection to the Supplemental filing on May 24, 2013.
The Center appointed Wolter Wefers Bettink, David E. Sorkin and Richard G. Lyon as panelists in this matter on June 14, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 18, 2013 the Center issued an Administrative Panel Procedural Order No.1 (“Panel Order No.1”) that the Panel had accepted a portion of the Supplemental filing of the Complainant and that the Respondent was allowed to respond to that portion in its own Supplemental Filing. The Respondent submitted its Response to the Complainant's Supplemental filing on June 20, 2013.
4. Factual Background
The Complainant is a manufacturer of crystal wares since 1764. Its first trademark registration dates back to 1860 and consisted of the denomination "Baccarat France" and was filed for articles made of crystal glass. The Complainant is the owner of more than 700 trademarks across the world and holds at least three trademarks in the United States consisting of the word "Baccarat", of which the oldest was registered in 1978 (the US trademarks hereafter referred to as the "Trademarks").
The domain name <onlinebacarrat.com> was registered on June 12, 2012 (the "Domain Name").
Accordingly to the evidence provided by the Complainant and the Center’s screenshot on the date of the notification, the website under the Domain Name was used as a parking site.
5. Parties’ Contentions
A. Identical or Confusingly Similar
According to the Complainant, the Domain Name is identical or confusingly similar to the Trademarks. The non-descriptive part of the Domain Name consists of a misspelling of the word “Baccarat”, which forms part of the Trademarks. Furthermore, the gTLD denomination “.com” should be ignored in comparing the Trademarks and the Domain Name. The addition of the generic word "online" is not sufficient to distinguish the Domain Name from the Trademark.
B. Rights or Legitimate Interests
The Complainant contends that there is no evidence that the Respondent is commonly known by the name "Baccaratonline" or "baccarat". The Respondent is not related to the business of the Complainant, nor has the Complainant granted a license or authorization to the Respondent to register or use the Domain Name.
The Complainant submits that the Domain Name is directing to a webpage on which several hyperlinks are placed, most of which direct to websites which relate to crystal products of competitors of the Complainant. On the left side of the website are listed hyperlinks under the heading "related searches" which direct to another page containing several hyperlinks to websites mainly displaying the products of competitors of the Complainant. The Complainant submits that thereby the Respondent is not making a bona fide offering of goods or services as stated in paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that due to the strong reputation and the widely known character of the trademark BACCARAT throughout the world for a long time, the Trademarks are well-known. Therefore, according to the Complainant, the Respondent could not have ignored the Trademarks when it registered the Domain Name.
Furthermore, the Respondent has registered more than 400.000 domain names which according to the Complainant suggests that the Domain Name has only been registered to generate income through a pay-per-click- landing page or to be sold.
Together, these facts in the eyes of the Complainant are evidence of bad faith registration.
According to the Complainant, the Respondent is using the Domain Name to divert Internet users to a web page on which hyperlinks are displaced consisting of results in the field of online sales of crystal products. The Complainant contends that the Domain Name will mislead Internet users looking for Baccarat products, mainly because the commercial links are in the field of the Complainant's business. Some of the links redirect redirect users to websites of the Complainant's competitors and none of them to the official website of the Complainant.
According to the Complainant such use is unfair and disrupts its business and is evidence of bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy.
The Complainant submits that the Respondent is responsible for any parking program or other affiliation program which generates these links. It submits that the links may vary according to the contents of cookies placed onto the computer of the Internet user, so that some users would see links related to the Baccarat card game and others would see links to websites in the field of crystal items. The only and immediate purpose of the parking program, according to the Complainant, is to increase traffic on the website under the Domain Name for commercial gain, and the Respondent is responsible for the use of the parking program and the resulting content.
The Complainant mentions that the parties have corresponded about a change of the hyperlinks displayed on the website and that links to the field of jewelry, table wares or lightening would be blocked. According to the Complainant the Respondent has not or has not been able to change the content of the website so that this still displays links to websites with crystal wares products for Internet users having a cookie related to that field of products.
According to the Complainant, the Respondent knew that its use of the Domain Name was infringing its trademark rights and he Respondent has not taken sufficient and necessary steps to stop this. Such behavior, the Complainant contends, should be considered bad faith use of the Domain Name.
A. Identical or Confusingly Similar
The Respondent submits that the word "Baccarat" is a generic word that refers to a card game. The Domain Name is comprised of the generic words "online" and "Bacarrat", a misspelling of the generic word "Baccarat".
Further, the Respondent contends that a search of the USPTO database reveals 55 trademarks incorporating the word Baccarat, while a Google search for "onlinebaccarat" reveals an equally high number of websites that incorporate this phrase. According to the Respondent confusing similarity between the Domain Name and the Trademarks is less likely in a situation where there are many similar trademarks, because consumers would have learned to carefully differentiate between them.
The Respondent concludes that for these reasons the Domain Name is not confusingly similar to the trademark BACCARAT for crystal wares.
B. Rights or Legitimate Interests
The Respondent submits that it acquired the Domain Name as part of its business practice identifying and registering descriptive domain names which can be populated with pay-per-click advertising or sold at a price higher than the costs of registration. In order to avoid the registration of domain names that arguably coincide with trademarks, the Respondent operates an automated filtering system and uses human reviewers to identify domain names as potentially ineligible for registration because of trademark infringement.
According to the Respondent because the Domain Name consists of two generic words "online" and "bacarrat" it has the right to register the Domain Name and use it in a manner consistent with its generic meaning. The Respondent submits that it has registered and holds the Domain Name in the hope that online gambling might one day be legal throughout the United States.
The Respondent further submits that the use of domain names for a PPC landing page is legitimate and establishes rights or legitimate interests in a domain name.
The Respondent concludes that since it has registered a generic domain name that it has used to host PPC advertising related to the card game Baccarat, it is offering a legitimate service to consumers and therefore has an own right or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent refutes that by using the Domain Name, it intentionally attempts to attract for commercial gain Internet users to the Respondent's website or other online location by creating a likelihood of confusion with the Trademarks.
The Respondent contends that there is no evidence that it knew of and targeted the Complainant when it registered the Domain Name. During the registration process neither its automated filtering system nor its human reviewers identified the Domain Name as potentially ineligible for registration because it infringed a third party trademark. The Respondent submits that the Complainant does not provide any evidence that the Respondent targeted the Complainant, nor that it intentionally provided hyperlinks to websites of competitors of the Complainant in order to frustrate the Complainant's business. According to the Respondent, the screenshots of the website under the Domain name which it has submitted as evidence show links which appear when the landing page is first launched to either the Baccarat card game or items of general interest.
As to the screenshots submitted by the Complainant showing various key words and hyperlinks relating to Competitors of the Complainant in the crystal wares market, the Respondent points at the following "key facts":
- The screenshots contain the results of a search in the search box provided on the website under the Domain Name, not of landing page as it first appeared.
- The software used in connection with the landing page keeps track of the domain's most accessed key word and then displays those more prominently.
- The fact that the selection of key words may be used independently indicates that the Respondent is not targeting the Complainant.
- Furthermore, the Respondent contends that its efforts to block the keywords specifically provided by the Complainant shows that it did not have a bad faith intent to target the Complainant.
6. Supplemental Filings
Following receipt of the Response by the Center, the Complainant has submitted an unsolicited Supplemental filing. In its Panel Order No.1, the Panel has decided, in accordance with paragraphs 10 and 12 of the Rules, to accept this filing only in relation to the following portion of that filing and the related annex C:
"Complainant asserts that these are the true screenshots of the landing page of “www.onlinebacarrat.com”, at different dates and that it did only one internal search for the copies provided in Annex C of the Complaint. The results are not distorted by Complainant’s navigation on the website and reflect what every Internet user could have seen on “www.onlinebacarrat.com”. Annex C of these Supplemental Filings completes Annex C of the Complaint."
In its Response to the Complainant's Supplemental filing, the Respondent submits that the first four screenshots of landing pages which appear in Annex C predate the implementation of a "key word block" agreed upon by the parties. According to the Respondent for this reason these pages should be disregarded. In relation to the last two pages in Annex C to the Supplemental filing of the Complainant, the Respondent submits that these pages do not contain any keyword which the Complainant requested to be blocked. According to the Respondent this shows that the keyword block agreed between the parties was effective in addressing the Complainant's request at the time and that consequently the Complainant can not show that the Respondent was targeting it.
7. Discussion and Findings
A. Identical or confusingly similar
The Complainant has shown that it has rights in the Trademarks. The element "bacarrat" is a misspelling of and confusingly similar to the word "baccarat" in the Trademarks.
In the Panel's view, the addition of the descriptive word "online" cannot prevent the Domain Name from creating a likelihood of confusion with the Trademarks (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, and BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338).
Therefore, the Panel concludes that the Domain Name is confusingly similar to the Trademarks.
B. Rights or Legitimate Interests
Based on the evidence submitted, the Panel accepts that there is no connection or affiliation between the Respondent and the Complainant and that the Respondent has not received any license or consent to use the Trademarks in the Domain Name. This may be sufficient for a prima facie finding of no rights or legitimate interests, but for the fact that "baccarat" may also refer to a card game. In addition, this Panel agrees that the business of registering domain names to generate income with PPC landing pages or by selling domain names with a profit may be a legitimate business. Such use of the Domain Name may therefore constitute use in connection with the bona fide offering of goods or services.
However, several other facts are relevant in this respect.
The Domain Name resolves to a landing page which shows a visitor links to other websites which are generated by an advertising program to which the Respondent has subscribed. As the Respondent has indicated, it receives a share of the income generated by the clicks on the links on its landing page.
The Panel considers that as a professional domain name entrepreneur the Respondent is or should be aware of the workings of the advertising service he has contracted. Apparently, this generates PPC links which are tailored to the profile of the user laid down in cookies placed on his/her computer and/or shown by its behavior on the website. If that profile indicates an interest in, for instance, crystal wares or related goods, the advertising program generates links to websites containing products similar to those of the Complainant.
This is evidenced by the screenshots submitted by the Complainant at Annex C of the Complaint.
There is no evidence that, as the Respondent submits, these screenshots have been generated by other than normal behavior of the Complainant on the website or that the links shown have been unduly influenced by the Complainant.
The Respondent has not refuted that the links that a user would see are determined by the user's profile, as set out above. Therefore, the Panel assumes that a user may be shown links to websites relating to crystal wares, if according to the advertising program that fits best with the profile of the user.
The Panel notes that the Respondent, apparently after these proceedings were initiated, has barred access to the website under the Domain Name, so that the Panel has not been able to verify the workings of the website. The Respondent has not given a reason for this behavior which complicates the fact finding by the Panel.
Taking all the above into account, the Panel concludes that it comes for the account of the Respondent that the website under the Domain Name shows some users links to websites containing products of the Complainant and its competitors.
Under the circumstances of this case, such a use of the Domain Name can not be considered to constitute a bona fide offering of goods and services.
Therefore, the Panel concludes that the Complainant has provided sufficient evidence that the Respondent has no rights or legitimate interests as set out in paragraph 4(c)(iii) of the UDRP.
C. Registered and Used in Bad Faith
The Respondent has not refuted that it was aware of the Trademarks when it registered the Domain Name. There is ample evidence submitted by the Complainant of the longstanding and widespread reputation of the Trademarks and the other BACCARAT trademarks, which have been used by the Complainant since at least 1860. In fact, the Respondent mainly submits that its automated filtering system nor its human reviewers identified the Domain Name as potentially ineligible because it would infringe a third party trademark. Clearly, given the Respondent's business of commercializing generic domain names any flaw in that system or misjudgement, resulting in registering an infringing domain name, comes for the account of the Respondent.
As to the question of bad faith registration, the case revolves around the question whether the Respondent was targeting the Complainant when he registered the Domain Name. In this context "targeting" means not only whether the Respondent was or should have been aware of the Trademarks, but also whether it was or should have been aware of the likelihood that users visiting the website under the Domain Name would be presented with links to websites displaying the products of the Complainant and/or its competitors. As set out above under section 7B, that is the case. The Respondent has chosen the particular mechanism for his PPC website and is responsible for the fact that it generates links to websites related to crystal wares.
Therefore, the Respondent targeted the Trademarks when he registered the Domain Name as he knew (or should have known) that it was similar to the Trademarks and that it was likely that, when used in the context of its PPC business, it would “trigger” links to websites for the same products as the Complainant sells.
These facts, taken together, lead the Panel to conclude that the Domain Name was registered in bad faith.
As to bad faith use of the Domain Name, the facts show that the Respondent is using the Domain Name also to attract Internet users who believe that the website under the Domain Name relates to products of the Complainant.
In the opinion of the Panel, the fact that the Respondent, upon request of the Complainant, locked certain keywords relating to the website under the Domain Name- and is willing to lock others if so requested by the Complainant , does not remove the bad faith from the use of the Domain Name. On the contrary, the fact that the Respondent did not of itself block such keywords, but only after it was notified thereof by the Complainant, underlines the bad faith intent.
For all the foregoing reason the Panel concludes that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <onlinebacarrat.com> be transferred to the Complainant.
Wolter Wefers Bettink
Richard G. Lyon
David E. Sorkin
Date: June 28, 2013